Ex parte AGARWAL - Page 6




              Appeal No. 1995-2036                                                                                         
              Application 07/920,009                                                                                       



              prior art compositions disclosed by Fromuth “do not necessarily or inherently possess the                    
              characteristics of his claimed product.”                                                                     
                     The rejection of claims 26 through 29 under 35 U.S.C.  102/103 as anticipated                       
              by or, in the alternative, unpatentable over Fromuth, is affirmed.                                           
                            CLAIMS 3, 4, 9 THROUGH 11, 16, 17, AND 21 THROUGH 25                                           
                     Claims 3, 4, 9 through 11, 16, 17, and 21 through 25, however, stand on different                     
              footing.  These claims require a relatively high amount of aromatic polycarbonate resin in                   
              the polymeric blend.  For example, see illustrative claim 23, reproduced above, which                        
              recites “about 15 % by weight of an aromatic polycarbonate resin.”  As previously                            
              discussed, the invention disclosed by Fromuth is a thermoplastic composition containing                      
              about 1 to 8 percent by weight of aromatic polycarbonate.  In our judgment, Fromuth's                        
              thermoplastic compositions containing about 1 to 8 percent by weight of aromatic                             
              polycarbonate would not have suggested the compositions recited in claims 3, 4, 9 through                    
              11, 16, 17, and 21 through 25 which require at least about 15 parts by weight or about 15                    
              percent by weight of an aromatic polycarbonate resin.   The examiner has not established                     
              that a person having ordinary skill in the art would have been led from “here to there,” i.e.,               
              from the thermoplastic polyester compositions of Fromuth containing a relatively low                         
              amount of aromatic polycarbonate (about 1 to 8 percent by weight) to the thermoplastic                       
              compositions in claims 3, 4, 9 through 11, 16, 17, and 21 through 25 containing a relatively                 

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